Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 21 November 2010

Although the AmeriKat was miles away from her computer last week as she was instead kicking up the leaves in Clifton Village (picture, left) while venturing around her old Bristol alma mater, she is back this week in time to spread the Thanksgiving cheer. Thanksgiving is this Thursday, and for those who have followed the AmeriKat will know that it is her most favorite of holidays; copious amounts of roast birds (meow!), mashed potatoes, and pumpkin pie together with very little activity except changing the TV channels between football games - what is not to love?! The joy of Thanksgiving, because it is a non-denominational holiday, is that all Americans can and will celebrate it. Besides the Fourth of July, Thanksgiving is the most participatory and democratic of holidays.

A reminder of the importance of democracy in the US came late last Friday when a single senator, Senator Ron Wyden (D-Oregon, picture, right) stalled the Combating Online Infringement and Counterfeits Act (COICA) at a committee hearing. The Bill, which would have given the federal government power to shut down or block websites that participate in copyright infringement, had been unanimously approved by the Senate Judiciary Committee on Thursday. Wyden's objection may have the effect of postponing the Bill until the next Congress convenes. Wyden stated that:

"Deploying this statute to combat online copyright infringement seems almost like using a bunker-busting cluster bomb, when what you need is a precision-guided missile."

The Bill provides for the creation of a blacklist of websites that the US Government can seize if based in the US or require an ISP to block if they are located abroad. The Bill, which amends Chapter 113 of Title 18 of the US Code (which deals with stolen property) has the effect of targeting websites which are "dedicated to" and are "primarily designed" for copyright infringing activities or have no other "demonstrable commercially significant purpose or use" - which is one of those lofty definitions which makes the AmeriKat grimace. The actions are brought by a state's Attorney General who will apply to the court for an injunctive order to be served on the website domain registrant directly (if located in the jurisdiction) or on an ISP (if located outside the jurisdiction) with the effect of removing or blocking the website from the Domain Name System. There is no provision in the Bill requiring a hearing, trial or defence from the party served with one of these orders. The Bill also provides powers to stop credit card companies from authorizing transactions that occur on these websites. All court orders will be alerted to the Intellectual Property Enforcement Coordinator, Victoria Espinel (picture, top left), who will post the domain names on a publicly available website with relevant information on the order.

"Few things are more important to the future of the American economy and job creation than protecting our intellectual property. That is why legislation is supported by both labor and industry, and Democrats and republications are standing together."

However, critics have blasted the legislation as being overly severe and too broadly worded which would have the effect in practice of censoring websites that the government just doesn't like. The Electronic Frontiers Foundation, who have posted a list of websites that that they believe will be the first targeted if COICA is passed, stated that

"Blacklisting entire sites out of the domain name system is a reckless scheme that will undermine global Internet infrastructure and censor legitimate online speech."

It has been suggested that Senator Wyden will now attempt to put as many procedural roadblocks in the way of the Bill until the new Congress takes session in 2011, at which point the Bill will have to be resubmitted. At the end of September the man credited with technology central to the Internet, Sir Tim Berners-Lee, called the recent spate of bills threatening to block and cut off access to the Internet as a "blight".

The AmeriKat will be watching to see how Senator Wyden's roadblocking progresses.

Supreme Court hears gray goods arguments in Omega v Costco

The US Supreme Court heard arguments last week in the case of Omega v Costco (see previous AmeriKat reports here for detailed analysis of the case and arguments), a case appealed from the Ninth Circuit (California) which has the power to impact the future of the multibillion dollar "gray goods market". The "gray goods market" is where companies sell their products at a cheaper price to distributors based in countries other than where the product is ultimately retailed. Retailers, like Costco, will then buy the products from these overseas distributors and import them into the US to sell at a discount - a third off in the case of Costco's sale of the Omega Seamaster line.

The argument centers on whether Omega can use a copyrighted logo on one of their lines of watches as a mechanism for stopping Costco from selling them at a discount in their US stores. Costco is arguing that the Supreme Court extend their 1998 ruling of Quality King Distributors v L'Anza Research International (1998) which held that copyright owners do not have a right to control the market of their goods that have been imported and re-sold in the US. However, the Quality King ruling was about domestically made goods sold overseas and then imported back into the US. Here the goods are manufactured overseas, sold to overseas distributors and then imported into the US. The question to the Supreme Court is whether the 1998 ruling should be extended to these cases and also to determine the exact scope of the first-sale doctrine.

Although reported that the Justices did not give a clear indication of which way the ruling would go, they did seem concerned that there appears to be a statutory interpretation and a 9th circuit ruling that gives incentive to companies to manufacture goods overseas. Justice Ginsburg (picture, left) stated

"What earthly sense would it make to prefer goods that are manufactured abroad over those manufactured in the United States?"

The Supreme Court's decision will have a substantial impact on what goods retailers, especially those on-line retailers such as eBay or Amazon, can sell and import into the U.S. eBay, Intel, Amazon and Target have all voiced support for Costco. Omega, on the other hand, has support of the Obama administration, the ABA, and of course the music and film industries. The Supreme Court decision is expected in July 2011.

Between a Rock and a Hard place - Hard Rock trade marks hit the courts

Hard Rock Hotel Holdings LLC, which runs the Las Vegas Hard Rock Hotel & Casino, was sued in the Second Circuit for the Southern District of New York (Manhattan) in September by Hard Rock Cafe International Inc, the Florida-based owner of the Hard Rock trade marks. The trade mark owner alleged, amongst other things, that the reality show authorized by the Las Vegas company, "Rehab: Party at the Hard Rock Hotel", was tarnishing the Hard Rock brand. The lawsuit sought cancellation of the Las Vegas hotel's licence to use the marks. The casino has now fired back in a court filing two weeks ago which has claimed that it has done nothing wrong and is only a victim of "systematic legal and business harassment" by the Florida owner. The casino is also counterclaiming for breach of contract and tortious interference with business relations. The casino's filing also says that:

"The Cafe complains about a range of alleged trademark abuses that in many cases it has long known about, tolerated or even approved. Most notably, the Cafe claims to be shocked and disturbed by the popular reality television show 'Rehab: Party at the Hard Rock Hotel,' filmed at the Hard Rock Hotel and Casino Las Vegas – despite the fact that this show and the lively behavior it portrays have already been on the air for two years; depicts an event similar to the 'Detox' party held at one of the Cafe's properties (Biloxi, Miss); and has brought enormous positive publicity to the Hard Rock brand."

Last week the USPTO issued a proposal to change the rules for ex parte patent appeals before the Board of Patent Appeals and Interferences and requests for public comment on the changes. The changes will include rescinding the stayed 2008 Final Rule and simplifying the petitions practice in appeals. For more information see this Press Release from the USPTO. Last week also saw the USPTO launch their Twitter account. To follow the USPTO click here, the AmeriKat click here, and the IPKat click here.

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Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

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